If you’re an entrepreneur or small business owner, you’re going to have to make many critical decisions — starting with how you choose to protect your brand. As you may know, the best way you can shield your slogan, logo, design, or product name from misuse and theft is with a registered trademark. Since your trademark is your most valuable asset, it’s essential to avoid any missteps and mistakes in ensuring its protection. Working with a trademark attorney can substantially increase your chances of successful registration the first time you submit your trademark application to the United States Patent and Trademark Office. But, you must select your legal counsel carefully. While there are a lot of intellectual property law firms out there, you should know what to look for to make sure you work with the right one.
Here are a few important things to consider when choosing a trademark attorney.
Trademark law is a highly nuanced field that involves specific skills, training, and experience. Not just any lawyer has the knowledge and experience required to handle trademark matters — an attorney who practices in a different area of law is probably not the right one to hire to file your trademark application or respond to an office action.
Additionally, just because a lawyer focuses on one area of Intellectual Property doesn’t mean that they have the acumen required to handle your trademark matter. Intellectual property is a broad field that covers patents, trademarks, and copyrights — each category is distinct. For the best possible results in your case, it’s best to work with an attorney who exclusively handles trademarks and works with the USPTO on a daily basis.
Any attorney can file an application to register a trademark. However, not every trademark is registered successfully. Filing a trademark application is not just about facilitating paperwork — it’s a legally specific process that takes adeptness, proficiency, and skill. With your livelihood and business on the line, it’s a good idea to verify the attorney’s track record of successful trademark registrations prior to hiring them.
When choosing a trademark attorney, it’s best to keep in mind that filing an application to register your trademark is just one aspect of trademark law. As a business owner, you may encounter many other issues concerning your brand that may require an attorney's assistance.
A good trademark attorney should have experience in:
An attorney who has extensive knowledge concerning all areas of trademark law can provide strategic advice regarding any problems you could potentially face when it comes to protecting your brand.
Some of the most important qualities in a trademark attorney are honesty and integrity. Your brand's success depends on your mark, and you’ll be putting a lot of trust into your attorney to help you accomplish your goals.
A trademark attorney should be upfront with you when assessing your chances of successful registration — even if it might not necessarily be what you want to hear. Rather than focusing on the number of trademark applications they can file, a good trademark filing lawyer will dedicate their time to ensuring quality results for each client. They should work with you to increase the likelihood your mark will be registered the first time you file.
You should also look for integrity in the trademark attorney with whom you work. They should foster a positive working relationship and put the interests of your business first. Remember, depending on the nature of your business, you should select a trademark attorney keeping your long-term business plans in mind. Even after you’ve successfully registered your trademark, you will still have to monitor it, renew it, and potentially take legal action to protect your rights to it. You may also want to add additional trademarks to your portfolio over time.
Trademark law matters require a hands-on approach, meticulous attention to detail, and effective client communication. Do-it-yourself platforms on the internet cannot provide the personalized attention you would receive from an established trademark law firm. It’s crucial to work one-on-one with an attorney who understands your business objectives and any industry hazards involved with safeguarding your brand.
Communication is the most integral component of the relationship you will have with your trademark attorney. Your attorney should be available to answer questions or concerns you have within a reasonable amount of time and keep you updated on the status of your application. They should also take the time to discuss any issues and problems that might arise, and ensure that you understand the legal and administrative process involved with registering your trademark.
One of the purposes of hiring a trademark attorney is to help ensure the USPTO trademark registration process goes as smoothly as possible. When you hire an attorney, you can help prevent time-consuming and costly pitfalls that you might have encountered by handling your application on your own or with a non-specialist. While trademark attorney costs can vary widely, based on the scope of work, a trademark law firm should offer customized services to ensure your business resources are being used efficiently.
Since the concepts you come up with impact your business’s bottom line, discretion is another quality you should look for when you retain an attorney to work on your trademark matter. Since competition is fierce in all industries, you should feel confident that your attorney will take the necessary measures to protect your confidential ideas.
Reputation in the field of trademark law is paramount. You shouldn’t pick a trademark law firm based solely on cost, but rather on the quality of services they can provide. Often, reviews and testimonials from colleagues and former clients can speak volumes about the kind of experience you can expect when you work with a particular firm or attorney.
If there aren’t many trademark attorneys where you live, you might be wondering, “Do I have to hire a trademark attorney near me?” Since USPTO federal trademark registration is nationwide, a trademark filing attorney in any state can work with you remotely to file your application and represent you in matters before the Trademark Trials and Appeals Board. However, if you’re facing infringement litigation in a state court, you will need to have an attorney licensed in your jurisdiction to serve as your legal counsel.
Having a qualified trademark attorney by your side can make all the difference when it comes to safeguarding your brand. With more than 5,500 successful trademark registrations to our name, the Trademark Lawyer Law Firm, PLLC is committed to helping our clients meet their objectives and grow successful businesses. Our firm has a well-deserved reputation in the field of trademark law for the high-quality legal services and personalized attention our attorneys provide. Contact us today to schedule a free 15-minute consultation with an experienced trademark attorney.
Suspensions are when your application is on hold. There are various reasons a trademark application can be suspended. However “likelihood of confusion” with prior application(s) filed and submission of foreign application are the most common reasons the USPTO may suspend an application. During a trademark suspension period, your lawyer will provide guidance on the next steps and whether it might be best to file an argument or pursue a coexistence agreement.
A disclaimer usually refers to a statement which indicates that you are not claiming exclusive rights to use the word(s) or a design element in your trademark application. A disclaimer allows for registration without creating a false impression of the registrant’s rights.
A good example of this is disclaiming “café” if your services are for a café.
If a trademark is not eligible for the Principal Registry, there is sometimes an option to register on the Supplemental Registry.
In cases where the USPTO finds the trademark application is merely ornamental, merely descriptive, or primarily geographically descriptive, the USPTO may allow the application to be registered on the Supplemental Registry. However, over time, the mark may acquire distinctiveness and possibly become eligible for the Principal Registry.
Two dates must be specified in a trademark application:
Date of First Use Anywhere: The “anywhere” refers to use in the U.S. or elsewhere. This is the date the goods were first sold or transported, or the services were first rendered under the mark. The use must also have been bona fide and in the ordinary course of trade.
Date of First Use in Commerce: This is the date when the goods were first sold or transported, or the services were first rendered under the mark in interstate or international commerce. The use of the mark must have been bona fide and in the ordinary course of trade.
The renewal timeframe for a trademark is between the 9th and 10th year anniversary of the trademark registration, and then in ten-year intervals. It is important to be aware that the USPTO also requires a registrant to provide an affidavit at the 5th and 6th years of ownership stating that the trademark is still being used in commerce. Failure to comply with the renewal timeframes or the affidavit requirements will result in the cancellation of the trademark registration.